UK: Every Little Helps; How To Protect Your Slogan As A Trade Mark

Introduction

Slogans can be powerful advertising tools, especially if the public becomes familiar with them and they become synonymous with a product. Much of the general public cannot hear "Have a break..." without thinking of Kit Kat chocolate bars, for example. Naturally brand owners seek to protect their brand investment by stopping others from using these phrases, with the intention being that they will be seen as belonging to their brand alone. Whether they can do this is largely dictated by trade mark law.¹

In principle, a trade mark can consist of any 'sign' capable of being represented graphically, provided it can distinguish the goods of one undertaking from those of another. This includes words and logos, but can also include colours, sounds and slogans. However, in order to be registered the sign must have distinctive character and it is this requirement that frequently poses a problem for slogan applications.

How is distinctive character assessed?

If a trade mark lacks distinctive character, it cannot distinguish the goods of one undertaking from those of another. Distinctive character is assessed both by reference to the goods or services applied for, and by reference to the relevant public's perception of the mark. In some cases it can be proven by showing a mark has acquired distinctiveness as a result of the use made of it.

The test for whether a slogan (or any other similar statement) has distinctive character is the same as for any other sign. However, in practice consumers are less likely to recognise a slogan as functioning as a trade mark. A slogan cannot be excluded from registration simply because it has been used in a promotional or laudatory way, but if the relevant public perceive it as functioning solely as an advertising message, then it will lack distinctiveness.

Recent European Cases

The recent decision of the Court of First Instance in T-523/09 Smart Technologies ULC v OHIM (2011) considered the registrability of the word mark WIR MACHEN DAS BESONDERE EINFACH ("we make special (things) simple"). In doing so it confirmed that the following principles were relevant to the registration of slogan marks:

• it is inappropriate to apply stricter criteria to the registration of slogan marks than to the registration of any other mark, no new or modified tests for distinctiveness are justified
• a slogan is not excluded from registration merely because it contains indications of quality, or incitements to purchase
• the registry will evaluate the extent to which the slogan performs promotional functions and the extent to which it performs the function of guaranteeing the origin of goods or services
• slogans are devoid of distinctive character if they are liable to be perceived by the relevant public as a mere 'promotional formula'

The Court, when applying these principles, determined that Smart Technologies' slogan was laudatory, contained no unusual variations in syntax or grammar, and was "merely an advertising slogan referring to the qualities of the goods" as opposed to a badge of origin. The application was therefore dismissed and Smart Tech footed the bill.

Smart Technologies can be contrasted with the European Court of Justice's favourable treatment of the slogan VORSPRUNG DURCH TECHNIK (meaning, inter alia, advance or advantage through technology) in the case of C-398/08 Audi AG v OHIM (2010). Here it was determined that although there is no legal requirement for a slogan to be imaginative, surprising, or to contain word play, the presence of these features can assist applicants in establishing that a sign is distinctive. In fact it was the presence of imagination, surprise, and word play that secured the validity of the mark in this case. The originality and resonance of the slogan, combined with its use by Audi for many years, provided the necessary link in the mind of the relevant public between the goods, services and the undertaking. It was able to perform its function as a guarantee of origin.

Slogan marks in the US

• a slogan can be registered if it serves as a 'source identifier' (i.e. functions as a trademark) and is inherently distinctive or has acquired distinctiveness
• slogans that are merely informational or that are common laudatory phrases that would ordinarily be used in business (or in the particular industry) are not registrable
• a slogan will not function as a service mark if it conveys advertising or promotional information rather than identifying the source of the services
• slogans on items such as clothing will be considered merely ornamental and refused registration if consumers perceive the slogans as conveying a message, rather than indicating source of the goods.
• in order to function as a trademark on its own, the slogan must create a separate impression apart from the other material on the label/packaging.

Practical Advice

The registrability of a slogan as a trade mark depends on whether the slogan has sufficient distinctive character to enable it to perform an origin function, and therefore distinguish the goods or services of one undertaking from those of another. This can be a question of the slogan itself, but also the context in which it is presented to consumers and above all, how they perceive it. There is no specific guidance as to what is required from a slogan in order to accomplish this, but it is clear that those slogans which serve only to promote or describe goods or services will not be sufficiently distinctive.

Prospective applicants can improve their chances of registration by focusing on two things. First, applicants should consider how creative and distinctive (in lay terms) their slogan is during its development. Although this is not a strict legal requirement, both Smart Tech and Audi indicate that the more unusual a sign is, the more likely it is to be able to serve as a badge of origin. The following factors can help to establish distinctive character in a slogan:

• if it can have a number of meanings
• it constitutes a play on words
• a consumer would perceive it as imaginative, surprising and unexpected
• it does not follow usual rules of grammar
• it includes made-up words
• it triggers an interpretative thought process in the consumer i.e its meaning is ambiguous or unusual

Second, applicants should think carefully about how they use their slogan, and ensure that it is presented to consumers as performing an origin/source identifier function, over and above any promotional message it may convey. This aspect of slogan use is extremely important if a brand hopes to protect its interests in the phrase.

Footnotes

1. This article primarily deals with the law relating to the EU-wide Community Trade Mark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.